The U.S. Court of Appeals for the Ninth Circuit has held that a fair use defense fails as a matter of law if the defendant’s use creates a likelihood of confusion. Brother Records, Inc. v. Alan Jardine, 2003 U.S. App. LEXIS 1335 (9th Cir. Jan. 28, 2003).
The plaintiff owns the mark BEACH BOYS for musical entertainment services. The defendant, a former band member, performed musical concerts under various names that included the mark BEACH BOYS, such as AL JARDIN OF THE BEACH BOYS and BEACH BOYS and FAMILY. The district court rejected the defendant’s fair use defense and awarded summary judgment to the plaintiff.
The Ninth Circuit affirmed. The court explained that there are two types of fair use defenses: the "classic" fair use defense, where the defendant uses the challenged term in its primary sense to describe the defendant’s services, and the "nominative" fair use defense, where the defendant uses the challenged term to describe the plaintiff’s services. However, both defenses
